IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Partes Review of:
`U.S. Patent No. 9,697,563
`Issued: July 4, 2017
`Application No.: 14/617,306
`Filing Date: February 9, 2015
`
`)
`)
`)
`)
`)
`
`For: System and Method for Providing Electronic Commerce Data
`
`DECLARATION OF DR. ROSS A. MALAGA IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,697,563
`
`Two Tap
`Exhibit 1004
`Page 001
`
`
`
`In re Inter Partes Review of:
`U.S. Patent No. 9,697,563
`Issued: July 4, 2017
`Application No.: 14/617,306
`Filing Date: February 9, 2015
`
`)
`)
`)
`)
`)
`
`For: System and Method for Providing Electronic Commerce Data
`
`DECLARATION OF DR. ROSS A. MALAGA IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,697,563
`
`Two Tap
`Exhibit 1004
`Page 001
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`
`
`
`
`
`
`
`
`
`
`INTRODUCTION ........................................................................................... 1
`EXPERIENCE AND QUALIFICATIONS ..................................................... 1
`STATUS AS AN INDEPENDENT EXPERT WITNESS .............................. 5
` UNDERSTANDING OF GOVERNING LAW .............................................. 5
`RELEVANT TIME PERIOD FOR THE OBVIOUSNESS
`ANALYSIS ...................................................................................................... 8
` MATERIALS RELIED ON IN FORMING MY OPINION........................... 9
` PERSON OF ORDINARY SKILL IN THE ART .......................................... 9
` OVERVIEW OF THE ’563 PATENT .......................................................... 11
` PROSECUTION HISTORY OF THE ’563 PATENT .................................. 18
`CLAIM CONSTRUCTION .......................................................................... 22
` BACKGROUND ON PRIOR ART .............................................................. 29
` OPINIONS ON GROUND 1: CLAIMS 1-18 ARE OBVIOUS OVER
`SOLONCHEV IN VIEW OF TARVYDAS OR A POSA’S
`KNOWLEDGE .............................................................................................. 58
` SECONDARY CONSIDERATIONS ......................................................... 107
` CONCLUSION ............................................................................................ 107
`
`
`
`
`i
`
`Two Tap
`Exhibit 1004
`Page 002
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`
`
`
`
`INTRODUCTION
`
`1.
`
`I, Ross A. Malaga, Ph.D., have been retained by Latham & Watkins on
`
`behalf of Amber.io, Inc. d/b/a Two Tap (“Two Tap”) to provide an analysis of the
`
`scope and content of U.S. Patent No. 9,697,563 (“the ’563 patent”) relative to the
`
`state of the art at the time of the earliest application to which the ’563 patent claims
`
`priority. My analysis relates to claims 1-18. I have also been retained to provide
`
`analysis regarding what a person of ordinary skill in the art would have understood
`
`at the time of the earliest application underlying the ’563 patent.
`
`2.
`
`This report summarizes the opinions I have formed to date. I reserve
`
`the right to modify my opinions, if necessary, based on further review and analysis
`
`of information that I receive subsequent to the filing of this report, including in
`
`response to positions taken by 72Lux, Inc., d/b/a Shoppable.com (“Shoppable”) or
`
`its experts that I have not yet seen, including any secondary consideration evidence
`
`that Shoppable or its expert may consider and present.
`
` EXPERIENCE AND QUALIFICATIONS
`
`3.
`
`I have over twenty years of experience in the fields of information
`
`systems, electronic commerce (“e-commerce”), and affiliate networking business as
`
`an entrepreneur, practitioner, and educator.
`
`1
`
`
`
`Two Tap
`Exhibit 1004
`Page 003
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`4.
`
`I have a Ph.D. in information systems from George Mason University.
`
`I also have an M.S. in information systems technology from George Washington
`
`University and a B.A. in political science from American University.
`
`5.
`
`From 1996 to the present, I have been president of RAM Enterprises
`
`with which I provide e-commerce consulting services, such as with affiliate
`
`marketing business models, Web development, search engine optimization (SEO),
`
`pay-per-click (PPC) marketing, and social media marketing to small-to-medium
`
`enterprises and Fortune 500 companies. I also build and run various e-commerce
`
`Websites and online retail companies. For example, I implemented an affiliate
`
`marketing model for a Fortune 500 company that generated commissions for auto
`
`auctions.
`
`6.
`
`Starting in 2005, I became faculty at Montclair State University in the
`
`department of Information Management and Business Analytics. I have taught
`
`courses in e-commerce and web development at the undergraduate and graduate
`
`level. In my Electronic Commerce Business Value and Practicum in E-Commerce
`
`classes, my students design and build e-commerce affiliate websites as part of their
`
`final projects. These projects have included affiliate marketing for beauty products,
`
`gaming headsets, fashion, and many other consumer products.
`
`7.
`
`I have written several journal publications and book chapters on e-
`
`commerce and affiliate marketing, including:
`
`2
`
`
`
`Two Tap
`Exhibit 1004
`Page 004
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`• Malaga, R. (2014). Do Web Privacy Policies Still Matter?
`
`Academy of Information and Management Sciences Journal,
`
`17(1).
`
`• Malaga, R. (2009). Web 2.0 Techniques for Search Engine
`
`Optimization - Two case studies. Review of Business Research,
`
`9(1), 132-139.
`
`• Malaga, R. (2009). Taxing E-Commerce Affiliates – The
`
`Potential Impact of New York State’s “Amazon Tax”. Journal
`
`of Applied Business Research, 25(4), 31-35.
`
`• Malaga, R. (2007). The New Marketing Intermediaries – A
`
`multiple case study of three new E-business models. Journal of
`
`Academy of Business and Economics, 7(3), 158-164.
`
`• Malaga, R. (2008). The Retaliatory Feedback Problem -
`
`Evidence from eBay and a proposed solution. Hersey, PA:
`
`Information Systems Research: Public and Private Sector
`
`Applications.
`
`• Malaga, R. (2008). The Value of Search Engine Optimization –
`
`An action research project at a new e-commerce site (pp. 1115-
`
`1129).
`
` Hersey, PA: Electronic Commerce: Concepts,
`
`Methodologies, Tools and Applications.
`3
`
`
`
`Two Tap
`Exhibit 1004
`Page 005
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`8.
`
`I have further been involved in several conference proceedings
`
`addressing issues in e-commerce and affiliate network business models, including:
`
`• Allyn, M., Malaga, R., Misra, R. (2011). Using E-Commerce to
`
`Teach Entrepreneurship in a Classroom - A Case Study (vol. 2,
`
`pp. 87-93). Mumbai: Indian Institute of Technology Mumbai.
`
`Refereed
`
`• Malaga, R. (2008). Taxing E-Commerce Affiliates – The
`
`Potential Impact Of New York State’s “Amazon Tax”. Las
`
`Vegas, NV: Proceedings of the International Academy of
`
`Business and Economics Conference 2008. Refereed
`
`• Malaga, R. (2007). The New Marketing Intermediaries – A
`
`multiple case study of three new E-business models. Las Vegas,
`
`NV: International Academy of Business and Economics
`
`Conference. Refereed
`
`• Malaga, R., Foley, P., Khoo, L., Jayawardhena, C. (2000).
`
`Internet and electronic commerce use: a
`
`three country
`
`comparison (pp. 26). Memphis, TN: First Annual Global
`
`Information Technology World Conference.
`
`• Malaga, R., Wertz, N. (2000). The use of Reputation
`
`Mechanisms
`
`in Electronic Commerce: An Empirical
`4
`
`
`
`Two Tap
`Exhibit 1004
`Page 006
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`Investigation. Americas Conference on Information Systems.
`
`Refereed
`
`9.
`
`I have served on the editorial review board for the Journal of Electronic
`
`Commerce in Organizations, and as a reviewer for the International Journal of
`
`Electronic Commerce, the International Journal of Electronic Business, and the
`
`Journal of Electronic Commerce Research. All of these journals are focused on e-
`
`commerce topics such as affiliate marketing.
`
`10. A copy of my curriculum vitae is in Ex. 1005.
`
` STATUS AS AN INDEPENDENT EXPERT WITNESS
`
`11.
`
`I am being compensated at the rate of $375 per hour for my work on
`
`this declaration. My fee is not contingent on the outcome of any matter or on any of
`
`the technical positions I explain in this declaration.
`
`12.
`
`I have been informed that Shoppable claims ownership of the ’563
`
`Patent. I have no financial interest in Shoppable and to my recollection I have never
`
`had any contact with the listed inventors of the ’563 Patent.
`
` UNDERSTANDING OF GOVERNING LAW
`
`13.
`
`I understand that statutory and judicially created standards must be
`
`considered to determine the validity of a patent claim. I am not an attorney and,
`
`consequently, will offer no opinion on the law itself. My understanding of the
`
`5
`
`
`
`Two Tap
`Exhibit 1004
`Page 007
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`pertinent law is described in this section and is the result of explanations provided
`
`by counsel. I have applied this understanding in my analysis.
`
`14.
`
`I understand that a patent claim is unpatentable if it is anticipated or
`
`obvious in view of the prior art. I further understand that the frame of reference for
`
`determining whether a claim is anticipated or obvious is from the perspective of a
`
`person of ordinary skill in the relevant art (“POSA”) at the time the invention was
`
`made.
`
`Anticipation
`
`15.
`
`I understand that for a patent claim to be anticipated by the prior art,
`
`each and every limitation of the claim must be found, expressly or inherently, in a
`
`single prior art reference as recited in the claim. I understand a claim limitation not
`
`expressly found in a prior art reference is inherent if the prior art necessarily
`
`functions in accordance with, or includes, the claim limitation. Mere probability that
`
`a limitation is included is not sufficient to establish inherency.
`
`Obviousness
`
`16.
`
`In analyzing obviousness in light of the prior art I understand that it is
`
`important to understand the scope of the claims, the level of skill in the relevant art,
`
`the scope and content of the prior art, the differences between the prior art and the
`
`claims, and any objective indicia of non-obviousness (also called secondary
`
`considerations).
`
`6
`
`
`
`Two Tap
`Exhibit 1004
`Page 008
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`17.
`
`I understand that a patent claim is unpatentable for obviousness if the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a POSA to which said subject matter pertains. I understand
`
`that obviousness may be based on one reference or a combination of references. I
`
`understand that the combination of familiar elements according to known methods
`
`is likely to be obvious when it does no more than yield predictable results.
`
`18.
`
`I understand that when a patented invention is a combination of known
`
`elements, the Board must determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue by
`
`considering the teachings of prior art references, the effects of demands known to
`
`people working in the field or present in the marketplace, and the background
`
`knowledge possessed by a POSA.
`
`19.
`
`I have been informed that the Supreme Court has recognized several
`
`rationales for combining references or modifying a reference to show obviousness
`
`of the claimed subject matter. I understand that several of these rationales are: 1)
`
`combining prior art elements according to known methods to yield predictable
`
`results; 2) simple substitution of one known element for another to obtain
`
`predictable results; 3) use of a known technique to improve a similar device
`
`(method or product) in the same way; 4) applying a known technique to a known
`
`7
`
`
`
`Two Tap
`Exhibit 1004
`Page 009
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`device (method or product) ready for improvement to yield predictable results;
`
`5 ) choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success, 6 ) and some teaching, suggestion, or
`
`motivation in the prior art that would have led one of ordinary skill to modify the
`
`prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`20.
`
`I understand that in order to prove that a claimed invention is not
`
`patentable for obviousness, a petitioner must (1) identify the differences between the
`
`claim and particular disclosures in the prior art references, singly or in combination,
`
`(2) specifically explain how the prior art references could have been combined in
`
`order to arrive at the subject matter of the claimed invention, and (3) specifically
`
`explain why a POSA would have had reasons to so combine the prior art references.
`
` RELEVANT TIME PERIOD FOR THE OBVIOUSNESS ANALYSIS
`
`21.
`
`I understand that the ’563 patent purportedly claims priority to
`
`Provisional Application No. 61/704,076, filed on September 21, 2012. I have
`
`arrived at my opinions in this Declaration by relying on the knowledge of a POSA
`
`as of September 21, 2012, although I do not opine as to whether the Patent Owner’s
`
`claim of priority is proper.
`
`8
`
`
`
`Two Tap
`Exhibit 1004
`Page 010
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
` MATERIALS RELIED ON IN FORMING MY OPINION
`
`22. My opinions in this Declaration are based on more than 25 years of
`
`working in the field of information systems, including e-commerce, as well as my
`
`teaching and research experience. I have an established understanding of the
`
`relevant field at the relevant timeframe and I have an understanding of skill set,
`
`capabilities and knowledge of a POSA as of September 21, 2012.
`
`23. My opinions are also based on investigation and study of the patent at
`
`issue, its file history, and the prior art. In the course of forming my opinions, I have
`
`reviewed all the exhibits submitted with the Petition, which are specifically
`
`identified in Appendix A.
`
`24.
`
`I may rely upon these materials and/or additional materials to rebut
`
`arguments raised by the Patent Owner. Further, I may also consider additional
`
`documents and information in forming any necessary opinions including documents
`
`that may not yet have been provided to me.
`
` PERSON OF ORDINARY SKILL IN THE ART
`
`25.
`
`I have been informed that a POSA is a hypothetical person as of
`
`September 21, 2012, to whom an expert in the relevant field could assign a routine
`
`task with reasonable confidence that the task would be successfully carried out. I
`
`have been informed that evidence of the level of ordinary skill in the art can be
`
`determined based on information about the field including: the types of problems
`
`9
`
`
`
`Two Tap
`Exhibit 1004
`Page 011
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`encountered, known solutions, the speed of innovation, sophistication, and the
`
`educational level of active workers. I have considered these types of information
`
`along with my own background working with students and other professionals in the
`
`field to reach my conclusion.
`
`26.
`
`It is my opinion that the person of ordinary skill in the art at the relevant
`
`time would have had at least a Bachelor’s Degree in information systems,
`
`information technology, or computer science and at least two years of experience
`
`working in the field of e-commerce web development. A higher level of education,
`
`such as a Masters of Computer Science or Information Systems, could substitute for
`
`work experience.
`
`27. Based on my experience, I have an understanding of the capabilities
`
`and understandings of a POSA. I have supervised, directed, and instructed many
`
`such persons over the course of my career and thus feel comfortable opining as to
`
`the knowledge and understanding of such persons.
`
`28. The opinions in my declaration do not depend on this precise definition
`
`of a POSA. Based on my experience, the claims of the ’563 patent would be
`
`unpatentable from the perspective of any reasonable definition of a POSA with
`
`sufficient work experience and/or education in the field of computer science and e-
`
`commerce web development.
`
`10
`
`
`
`Two Tap
`Exhibit 1004
`Page 012
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
` OVERVIEW OF THE ’563 PATENT
`29. Affiliate marketing is a revenue-sharing partnership wherein a
`
`merchant pays a commission to an affiliate (also called a “publisher” or “content
`
`provider”) for customer traffic directed to the merchant from the publisher or
`
`merchant sales generated from the publisher. As an example, a publisher may review
`
`a product sold by the merchant and provide a link for a customer to click to purchase
`
`the product from the merchant. The publisher then receives a commission from the
`
`merchant upon a sale and/or increased traffic to the merchant’s website.
`
`30.
`
` But affiliate marketing results in some disadvantages to the publisher.
`
`First, by directing the customer to the merchant’s website, the publisher loses traffic
`
`on its own website. This is detrimental to the publisher because its own revenue
`
`stream depends on web traffic and customer retention. Once a customer is redirected
`
`to the retailer’s website, the customer may not return to the affiliate and may instead
`
`go straight to the retailer’s website for future purchases, costing the affiliate future
`
`commissions. The ’563 patent explains that when a user seeks to purchase a third-
`
`party product advertised or discussed on a website, the website typically “forward[s]
`
`traffic away from their own website to retailers’ websites . . . .” Ex. 1001 at 1:31-
`
`33.
`
`31. Second, to avoid directing a customer to external merchants’ websites,
`
`the publisher website would alternatively need “to operate their own e-commerce
`
`11
`
`
`
`Two Tap
`Exhibit 1004
`Page 013
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`software,” which is costly and time intensive. Id. at 1:34-35. For example, the
`
`original website would need to establish and maintain merchant relationships and/or
`
`handle customers’ orders, returns, questions, and complaints. The ’563 patent
`
`recognizes Amazon.com as an example of a website that offers customers the ability
`
`to purchase products from multiple third-party retailers in a universal checkout
`
`transaction, but notes that Amazon.com only operates through its own e-commerce
`
`retail site, handling merchant relationships and/or handling customers’ orders,
`
`returns, questions, and complaints. This makes the “entire experience of the e-
`
`commerce occur[] on their website.” Id. at 1:40-45. Because other websites are not
`
`able to access Amazon.com’s database or software in their own multi-retailer
`
`checkout processes, these other websites would therefore need to create their own
`
`merchandise database to have access to merchandise from multiple merchants.
`
`32. The ’563 patent states that it aims to solve these problems. The
`
`purported invention allows for publishers of websites and applications to monetize
`
`sales of third-party products from multiple merchants without directing traffic away
`
`from the original website and without hosting their own e-commerce software. Id.
`
`at 1:31-38; 1:65-2:12.
`
`12
`
`
`
`Two Tap
`Exhibit 1004
`Page 014
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`33. Figure 1A,1 reproduced below, illustrates the purported invention from
`
`the ’563 patent.
`
`
`
`34.
`
`In Figure 1A, the “E-Commerce System” 102 includes a processing
`
`device that retrieves merchandise data from multiple independent “Merchants”
`
`106. This means that the “E-Commerce System” works to pull information about
`
`products that are for sale from multiple merchant websites 106, for example from
`
`Wal-mart, Target, Walgreens, etc. This merchandise data includes product
`
`information such as “the merchandise for sale, name of the merchant selling the
`
`merchandise, image, description, value, color, size, shape and form of the
`
`merchandise.” Id. at 4:24-28. The merchandise data is stored in a merchandise
`
`database in the “E-Commerce System.” Id. at 2:5-7; 4:34-45.
`
`
`
`1 Terms that appear in claim 1 of the ’563 patent are bold in this section for ease of
`
`reference.
`
`13
`
`
`
`Two Tap
`Exhibit 1004
`Page 015
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`35. The “merchandise data collected from the plurality of merchants
`
`may have different languages, styles and formats” so the differences are
`
`“consolidate[d]” and “convert[ed]” into a common format. Id. at 4:28-36. The
`
`common format means “normalized merchandise data with a single common
`
`language, style and format.” Id. at 4:28-36, 10:15-18.
`
`36. The e-commerce system includes a frame generation module coupled
`
`to the merchandise database which serves (or provides) the merchandise data.
`
`The generated frames that consist of merchandise data, are then rendered within
`
`the publisher’s website set off by a case or border. Ex. 1001 at Fig. 1B, 5:3-6.
`
`Various frames can be rendered on the publishers websites including merchandise
`
`frames Figs. 2A-2E, e-commerce frames Figs. 3A-3D, and universal checkout
`
`frames 4A. To a POSA, each such “frame” is a part of a web page that displays
`
`content set off by a case or a border. Ex. 1001 at 5:3-12, 6:13-16, 6:44-48, 10:29-
`
`30, 11:47-49.
`
`37. The publisher further embeds merchandise data within the content of
`
`the site of the publisher’s website. This means that an HTML link or other code
`
`(such as Javascript) is embedded into the publisher’s website code, and a user will
`
`view the merchandise data as if it is part of the publisher’s site. Ex. 1001 at 6:33-
`
`44.
`
`14
`
`
`
`Two Tap
`Exhibit 1004
`Page 016
`
`
`
`Declaration in Support ofInter Partes Review of USP 9,697,563
`
`38.
`
`Referring again to Figure 1A, reproduced above, the “Publisher Site”
`
`104 is a website, which provides content to “Users” 108. A “User” may be an
`
`individual person accessing the website or application from his/her home computer
`
`or mobile device (“user access device”) through a “Network” 110. Id. at 3:62-4z7.
`
`As one example, the “Publisher Site” 104 might be a fashion or beauty website
`
`providing information about products from multiple independent merchants, such as
`
`the information shown in Figure 2D, reproduced below, containing information
`
`about a Thierry Mugler eyeliner brush, Eyestudio Gel, and Bobbi Brown Long-Wear
`
`Gel Eyeliner.
`
`twee: makeup every (133'. wept on me mamas-u i go mto tue mm on me
`
`weekmds, ldou‘t usually wear makeup. Yep, l have a sewnvdaisa-mli job. But it
`
`tum me about 10 minutes every morning to put anything on. For my eyes. 1 hate this
`
`great Thierry Mugler wag-flush that a makeup artist was using on me when I was
`
`touring in Cauadrwu just dip it in the gel line: and go whomh and )1») get this little
`
`flick at the end. It’s a definite time saw. Before, I was using a smaller brush and you
`
`would have to build up the line a few times, but this one is much faster,
`
`In the past, he used a pencil or liquid liner, but then I decided that liquid lwlied too
`
`har¢somwlumgeiwemakeagetandMaiuellinehmgrwonmuefimnig
`
`Gd, which is like the
`
`'
`
`'
`
`but a little more moist. My
`
`eyes water, so i need something . will stay put. but I also have some things that i use
`
`to compensate. like, there's an eyeliner sale: walled She laq, which Benefit
`
`discontinuedlthinkAnd then Paul: Dortdid ammmmwhcreyoucouldtnkeau
`
`Fig. 20
`
`15
`
`Two Tap
`Exhibit 1004
`
`Page 017
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`39.
`
`In Figure 2D, the publisher site embeds a hyperlink using the text
`
`“Bobbi Brown Long-Wear Gel Eyeliner.” Once a “User” clicks on that hyperlink,
`
`a “merchandise frame” is generated by the e-commerce system and then rendered
`
`onto the publisher’s website with information about “Bobbi Brown Long-Wear Gel
`
`Eyeliner,” such as the identity of the third-party merchant Nordstrom, the price of
`
`$23, an image of the product, and a product description, as illustrated in Fig. 2E
`
`reproduced below. Id. at 5:67-6:4.
`
`
`
`16
`
`
`
`Two Tap
`Exhibit 1004
`Page 018
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`40. From this “merchandise frame,” the “User” can click on “ADD TO
`
`BAG” to place that item in a “shopping bag,” also referred to as an “e-commerce
`
`frame.” Id. at 6:57-59. An example e-commerce frame generated on a website is
`
`shown in Fig. 3B, reproduced below. In Fig. 3B, the e-commerce frame includes
`
`products from multiple merchants—here, Mexlan Giotto Alligator Derby from
`
`Nordstrom and Beats by Dr. Dre from Best Buy. Id. at 7:12-23.
`
`
`
`41.
`
` The e-commerce frame allows the user to click “CHECKOUT” when
`
`he/she is ready to finalize the order. Figure 4A, reproduced below, shows that a
`
`separate universal checkout frame is generated by the e-commerce system and
`
`rendered on the website of the publisher, which “provides an order summary [see
`17
`
`
`
`Two Tap
`Exhibit 1004
`Page 019
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`right side panel, Fig. 4A] divided into multiple merchants and the form to be filled
`
`out by the user in order to process the order.” Id. at 8:25-31. From here, the user
`
`can fill in the requested information about delivery address and payment and
`
`complete the order.
`
`
`
` PROSECUTION HISTORY OF THE ’563 PATENT
`
`42.
`
`I have also reviewed the relevant portions of the prosecution history of
`
`the ’563 patent. The application that issued as the ’563 patent was repeatedly
`
`rejected by the Patent Office over other affiliate-merchant prior art. Ex. 1006 at 88-
`
`99, 132-45, 202-14, 245-61.
`
`18
`
`
`
`Two Tap
`Exhibit 1004
`Page 020
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`43. Application claim 1, which eventually issued as claim 1 of the ’563
`
`patent, was heavily amended prior to issuance. Indeed, the Examiner found each
`
`and every limitation of application claim 1 to be taught by the prior art. However,
`
`in a final office action, the examiner indicated that incorporating a limitation of
`
`generating an e-commerce frame (previously in application claim 4) into claim 1
`
`would result in allowable subject matter. The examiner explained, “With respect to
`
`claim 4, claim 4 requires generating an ‘e-commerce frame’ in view of the
`
`merchandise data, the e-commerce frame being a ‘shopping bag’ of the selected
`
`merchandise data. . . . the shopping carts [of the prior art] have been equated to the
`
`universal checkout frame of claim 1. The combination of elements in claims 1 and
`
`4 recite generation of a shopping bag/e-commerce frame that is distinct from a
`
`generated universal checkout frame. As current[sic] applied, [the prior art does not]
`
`disclose the generation of both the universal checkout frame and an e-commerce
`
`frame/shopping bag. At best, the shopping carts of the prior art may be interpreted
`
`as only one of the recited frames, but not both.” Id. at 249-50.
`
`44. The applicant then amended its claims to add the limitations of claim 4
`
`into independent claim 1, and to cancel claim 4. Id. at 295-96, 300. In amending
`
`the claims, applicant explained that “During a conversation with Applicant’s
`
`representative on April 18, 2017, the Examiner indicated that, based on the current
`
`record, the subject matter of previous claim 4 appeared allowable independent of its
`
`19
`
`
`
`Two Tap
`Exhibit 1004
`Page 021
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`dependency on claim 3. As such, Applicant has amended claim 1 to include
`
`limitations similar to those of previous claim 4, and claim 4 has been canceled
`
`without prejudice.” Id. at 300. Accordingly a POSA reviewing the prosecution
`
`history of the ’563 patent would understand that the e-commerce frame (shopping
`
`bag) must be distinct from the universal checkout frame.
`
`45.
`
` For clarity, revised application claim 1 is shown below with the
`
`underlined portions relating to the incorporation of former application claim 4 into
`
`claim 1:
`
`20
`
`
`
`Two Tap
`Exhibit 1004
`Page 022
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`Ex. 1006 at 295.
`
`
`
`21
`
`
`
`Two Tap
`Exhibit 1004
`Page 023
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
` CLAIM CONSTRUCTION
`
`46.
`
`In my opinion, certain terms of the claims of the ’563 patent have the
`
`meanings as described below.
`
`47.
`
`“Merchandise data.” The plain and ordinary meaning of the term
`
`“merchandise data” to a POSA in the context of the ’563 patent is “information used
`
`to identify and describe merchandise for sale.” I have applied this definition to my
`
`opinions in this Declaration. The ’563 patent explains that merchandise data
`
`includes information such as “the merchandise for sale, name of the merchant selling
`
`the merchandise, image, description, value, color, size, shape and form of the
`
`merchandise.” Id. at 4:24-28. These examples accord with the plain and ordinary
`
`meaning of the term “merchandise data” to a POSA.
`
`48.
`
`“Merchandise database.” The plain and ordinary meaning of the term
`
`“merchandise database” to a POSA in the context of the ’563 patent is “a storage
`
`device that stores merchandise data for later access.” I have applied this definition
`
`to my opinions in this Declaration. There is no set size for a merchandise database
`
`in terms of number of products or file sizes or format such as a catalog broken down
`
`into groups or categories. Moreover, the merchandise database can be updated and
`
`revised, or held constant, depending on the intended use for the merchandise
`
`database. The ’563 patent further explains that the merchandise database “may store
`
`the merchandise metadata provided to a website or an application . . . of the publisher
`
`22
`
`
`
`Two Tap
`Exhibit 1004
`Page 024
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`104, which may be saved into a frame by the publisher 104 via the publisher interface
`
`application 124.” Id. at 4:39-43. Merchandise “metadata” is a form of merchandise
`
`data.
`
`49.
`
`“Merchandise frame.” The ’563 patent explains that a “merchandise
`
`frame” is a “group or set of merchandise data.” Ex. 1006, 4:46-51. In particular,
`
`the ’563 patent explains “publishers 104 . . . may search the merchandise database
`
`122 to curate one or more merchandise data and aggregate into a group or set of
`
`merchandise data (hereinafter ‘frame’) to be presented into the publisher’s 104 site
`
`via the frame stored in an e-commerce database 126.” Id. I have applied this
`
`definition to my opinions in this Declaration. Examples of “merchandise frames”
`
`include, but are not limited to, a “single merchandise frame [as in Fig. 2A],
`
`merchandise grid frame [as in Fig. 2B], merchandise slideshow frame [as in Fig.
`
`2C], merchandise link frame [as in Fig. 2D], merchandise frame [as in Fig. 2E] and
`
`a merchandise ad frame [as in Fig. 2F][.]” Id. at 5:30-35, 6:1-7. A frame can be
`
`assigned a unique identification (ID) “which points to the specific frame or group of
`
`merchandise data in the merchandise database 122.” Id. at 4:64-67. Merchandise
`
`frames do not require a visible case or border enclosing the group of data displayed.
`
`Examples of merchandise frames displayed to a user with no visible case or border
`
`are shown in Figures 2A, 2C, 2D, and 2F.
`
`23
`
`
`
`Two Tap
`Exhibit 1004
`Page 025
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,563
`
`50. Below is Figure 2B depicting the one embodiment of a “merchandise
`
`grid frame” highlighted in red as an example.
`
`
`
`51.
`
`“E-commerce frame.” The ’563 patent explains that an “e-commerce
`
`frame” is a “shopping cart or bag listing one or more merchandise selected by the
`
`user for purchase.” Ex. 1006, 6:13-16. I have applied this definition to my opinions
`
`in this Declaration. Examples of e-commerce frames are shown in Figures 3A-3D.
`
`Such e-commerce frames do not require a visible case or border when displayed to
`
`a user, such as the e-commerce frames shown in Figures 3A and 3B. Below, I
`
`reproduced Figure 3B with the “E-Commerce Frame” highlighted in red as an
`
`example. This example e-commerce frame/shopping bag displays the merchandise
`24
`
`
`
`Two Tap
`Exhibit 1004
`Page 026
`
`
`
`Declaration in Support of Inter Partes Review of USP 9,697,5
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
